In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530, the Federal Court of Australia decided that the use of “BOTOX”, “PROTOX” and phrases comprising “BOTOX” by Self Care IP Holdings Pty Ltd did not infringe the registered trade marks owned by Allergan Inc.

Court: Federal Court of Australia

Judge: Stewart J

Date of Judgment: 22 October 2020

Appeal from: Allergan Inc v Self Care IP Holdings [2017] ATMO 102

Allergan Inc is the holder of various BOTOX trade marks registered in Australia set out in Schedule 2. Allergan Australia Pty Ltd is the sponsor of Botox products on the Australian Register of Therapeutic Goods and authorised user of BOTOX marks in Australia. Collectively, Allergan Inc and Allergan Australia Pty Ltd will be referred as “Allergan”.

Self Care IP Holdings Pty Ltd (“Self Care”) filed for the word mark “freezeframe PROTOX”, application number 1653383 on 20 October 2014 in class 3 for anti-ageing serum, anti-wrinkle serum. The application was accepted by IP Australia but opposed by Allergan. The hearing officer decided in Self Care’s favour and directed “freezeframe PROTOX” to proceed to registration. 

Allergan brought the appeal before the Federal Court and fresh allegations against Self Care for infringing on Allergan’s BOTOX trade marks, passing off and contravening Australian Consumer Law. 

Allergan’s Registered Trade Marks (“BOTOX marks”) – Schedule 2

• BOTOX (04 Sept 2013) – Trade Mark No. 1578426 (“426 mark“) in classes 1,3,5,9,10,16,35,41,42,44,45
• BOTOX (12 Mar 2004) – Trade Mark No. 1008655 (“655 mark“) in class 3 for Cosmetics, face creams and lotions; skin creams and lotions
• (14 Dec 2000) – Trade Mark No. 860785 (“785 mark“) in class 5 for Pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain
• BOTOX (14 Dec 2000) – Trade Mark No. 860786 (“786 mark”) in class 5 for Pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain
• BOTOX (28 Feb 1991) – Trade Mark No. 551279 (“279 mark”) in class 5 for Pharmaceuticals for the therapeutic treatment of neurologic disorders and muscledystonias

Did the use of PROTOX infringed the registered trade mark BOTOX?

Allergan alleged that the use of word mark PROTOX and the use of various phrases including the word BOTOX and the use of the word BOTOX infringed its rights under s 120 of the TM Act. 

The Court considered the use of the word PROTOX in Self Care’s get up and took the view that PROTOX was used as a trade mark indicating trade origin. It also found PROTOX was usually used with freezeframe – “freezeframe by PROTOX” and “freezeframe PROTOX”. 

The Court next considered if PROTOX and BOTOX were deceptively similar. It found PROTOX and BOTOX were similar visually and aurally but dissimilar conceptually and in the meaning conveyed. It took the view that Self Care’s intention was to use a word that alluded to BOTOX but differentiated from it. The fame of the BOTOX mark is ubiquitous and consumers with imperfect recollection are unlikely to mistake PROTOX for BOTOX but would instead be reminded of BOTOX. 

The Court held that the use of PROTOX applied to its goods was unlikely to deceive or cause confusion.

Stewart J held that PROTOX was not deceptively similar to BOTOX.

The Court then considered if the goods were goods of the same description. Allergan’s goods bearing the BOTOX marks are therapeutic products and can only be administered by healthcare professionals while goods applied with PROTOX marks are mainly topical in nature and widely available. The co-existence of both PROTOX and BOTOX products in skincare clinics offered evidence of little or no risk of confusion. Manufacturers of topical products for PROTOX are not makers of injectable BOTOX products. Stewart J held that the goods were not goods of the same description within the meaning of s 120(2) of the Trade Marks Act 1995(Cth). 

Did the use of BOTOX in composite phrases infringed the registered mark BOTOX?

Self Care used phrases in comparative advertising that contained the word BOTOX. Allergan submitted that the use of BOTOX in promotional materials was indicative of the phrase being used as a label. The Court took the view that none of the phrases amounted to use of BOTOX as a trade mark or badge of origin. The use of the ® sign adjacent to BOTOX and the acknowledgement of BOTOX as the registered trade mark by Allergan served to distinguish BOTOX from Self Care’s products. The use of the freezeframe as an umbrella brand under which different products were sold with the name of the product and freezeframe further strengthened its distinguishing identity from BOTOX. By reasons foregoing, Self Care’s use of the BOTOX mark did not indicate a trade connection between Self Care and BOTOX. 

As for the registered goods, it was established earlier that goods in class 5 claimed by BOTOX were not goods of the same description as the goods for Self Care in class 3 given the differences in nature, trade channels and method of application. 

Allergan’s claim of trade mark infringement in regards to Self Care’s use of various phrases including BOTOX was not established.

Cross-Claim by Self Care for the removal of 655 mark and the 426 defensive mark

Self Care applied for the removal of word mark BOTOX in class (“655 mark”) due to non-use for the period 1 November 2014 to 1 November 2017. and cancellation of the BOTOX defensive mark (“426 mark”) and such other goods relied on by Allergan for trade mark infringement. 

Allergan bore the onus of showing evidence of use in good faith of the 655 mark in respect to cosmetics, face creams and lotion; skin creams and lotions. Allergan contended that if non-use were to be found for the 655 mark, the Court should exercise its discretion under s 101(3) of the Trade Mark Act 1995 (Cth) to allow the 655 mark to remain on the register. 

The Court found no evidence of Allergan’s use of the 655 mark for face creams and lotions; skin creams and lotions. As for ‘cosmetics’, the Court took the view that BOTOX preparations were pharmaceutical in nature and were not regarded as cosmetics (a term used to describe topically applied products not intended to modify or inhibit physiological processes). Allergan advanced arguments that the BOTOX products were cosmeceutical – cosmetic products that offered therapeutic use but the evidence did not support the existence of such a market. By the reasons foregoing, the Court did not see a need to exercise its discretion to allow the 655 mark to remain on the register.

As for the 426 mark, the test is whether the use of the mark substantially identical or deceptively similar to BOTOX by someone else in relation to the goods and services will be taken to indicate that there is a connection between those goods and services and the registered owner of the defensive mark, i.e. 426 mark. Self Care bore the onus of establishing that the use of BOTOX in relation to the goods in which it was registered as a defensive mark would not likely indicate a connection between those goods or services and the registered owner. The Court found that the goods by Self Care were not goods of the same description, as they have different trade channels and are different in nature to those of BOTOX. However, their market segments overlap and there was evidence of complementary use of the topically applied products and pharmaceuticals. Stewart J took the view that if the BOTOX mark were to be used in relation to skin care preparations, creams and cosmetics, there’s likelihood that consumers would find BOTOX and Self Care commercially linked.

The learned judge took the view the functions of the products inter alia, anti-aging creams, preparations sought to achieve the same outcome as that of a consumer having a BOTOX injection. Evidence also supported the conclusion that the same said products complemented or enhanced the effects of BOTOX. On balance, the factors foregoing outweighed the arguments advanced by Self Care that the competing products had different trade sources and different trade channels. It was held that Self Care did not manage to discharge the onus of proving the use of the word BOTOX on products in class 3 in relation to skin care preparations, creams and cosmetics would unlikely indicate a connection between those goods and the registered owner of BOTOX. The cross claim for removal of the 426 mark was not established.

Trade Mark Office Appeal

On the 19 September 2017, a delegate of the Registrar allowed the registration of freezeframe PROTOX in class 3. The application was made on the 20 October 2014. The application was opposed by Allergan on several grounds including ss 60, 42(b), 44, 58, 59 and 62A.  

In particular, Allergan contended that Self Care IP was not the owner of the mark under s 58 of the Trade Marks Act 1995 (Cth). The Court found that a license agreement was executed between Self Care IP and Self Care Corp on 17 August 2013. The license was non-exclusive, non-transferrable and granted rights to Self Care Corp to use inter alia, trade marks owned by Self Care IP. The license agreement corroborated with evidence tendered indicating Ms Amoroso’s intention to use Self Care IP as the entity to hold IPs and license them to Self Care Corp. It also demonstrated the controlling mind of Ms Amoroso who in her capacity as director of both Self Care IP and Self Care Corp, came up with the name of FREEZEFRAME PROTOX. The Court recognised that Self Care Corp was an authorised user of Self Care IP in the use of the FREEZEFRAME PROTOX mark. The ground of s 58 was not established.

Allergan, in opposing the application under s 59 bore the onus of proving Self Care IP did not have intention to use or authorise use of the mark at the filing date. The license agreement between Self Care IP and Self Care Corp was executed before the priority date of the application (20 October 2014), Allergan failed to discharge the onus of proving that Self Care IP did not have intentions to use the mark. The ground of s 59 was thus not made out.

The ground of s 62A involves the combined test of objective element – what Self Care IP did that fell short of standards of commercial behaviour observed by reasonable and experienced persons in the particular area and subjective element – what the person knew at the time when the person is making the application. The Court noted that Self Care IP did not attempt to pass off their products as products of BOTOX and insofar as the BOTOX marks were concerned, no claims of trade mark infringement were established. There was no misleading or deceptive conduct on the part of Self Care IP. The Court dismissed the ground of s 62A after Allergan failed to discharge the onus of proving bad faith. 

ACL – Affiliations 

Allergan alleged that statements made by Self Care IP made claims that Self Care’s products had affiliations with or had commercial links with Allergan. The statements were made deliberately with the intentions of misleading or deceiving consumers that the products are affiliated. 

The court found Self Care advertised its products as alternatives to BOTOX and differentiated its products from BOTOX. The Court also took the view that BOTOX was not generally known as the portmanteau word for “Botulinum Toxin” to the public. Instead BOTOX is known widely as an anti-wrinkle injections administered by licensed medical practitioners. Along with the reasons stated earlier (Self Care’s getup acknowledging BOTOX as ® of Allergan, Self Care’s dominant message as the ‘alternative’ to BOTOX, FREEZEFRAME’s clear and ubiquitous branding), Stewart J concluded that there was no intention by Self Care to deceive or mislead consumers as being affiliated with BOTOX.

ACL – Efficacy Representations 

Allergan alleged Self Care made representations of their products efficacy that contravened s 29 of the ACL. There were three categories of statements made. The first category being those of comparative efficacy. Self Care made efficacy representations of their products which the court thought would be understood by consumers as achieving a similar aesthetic outcome as BOTOX, without mentioning the mode of action or the mechanism of the products. The second category of statements was comparative statements that make representations that the effect of the Self Care’s products and Botox being the same or similar. That included statements such as …”which could produce a Botox-like visual effect when applied topically to the skin” and “delivers the results of a collagen injection in 5 sleeps, and a Botox injection in 4 weeks”. The Court noted the meaning behind the statement(in bold) meant achieving a Botox-like outcome and not the mechanism or mode of action just like the first category of statements. The third category of statements was those that made representations that the product works in the enhances, or prolong the effects of Botox. 

The Court took into account the formulations, active ingredients and studies done by expert and the results obtained and concluded that the efficacy representations were supported by scientific evidence except for the Night(tube) product which claimed to deliver the results of Botox injection in 4 weeks. The study associated with that product (Night(tube)) could not support the efficacy claims and was held to have contravened s 29(1)(g) of the ACL. The Court reviewed extensive evidence tendered in support of Self Care’s defence in positioning the product as an alternative to Botox and accepted Self Care’s argument. Allergan thus failed to discharge the onus of proving Self Care did not have reasonable grounds for making those representations.

Liability of Ms Amoroso

Allergan alleged that Ms Amoroso is a person who aided, abetted, counselled or procured the conduct of Self Care IP and Self Care Corp in the contravention of ss 18, 29 of the ACL within the meaning of Competition and Consumer Act 2010 (Cth). To be found liable as a joint tortfeasor, the director must have done something more than acting as a director and be involved in invading the applicant’s rights. The Court found Ms Amoroso did not venture beyond her duty as a director or CEO of the company. The Court found no personal liability on the part of Ms Amoroso and dismissed the allegations accordingly.

Therapeutic Goods Claim

Allergan alleged Self Care made statements that claim of a therapeutic use, and contravened the Therapeutic Goods Act (TG Act). For a good to be classified as a therapeutic good under the TG Act, it need not actually have a therapeutic effect or use; it need only be represented to have that effect. The Court did not find Self Care making representations that its goods have therapeutic use or effect. Allergan did not contest against that assertion. The statements made by Self Care did not claim to have the same mechanism or mode of action as a therapeutic good; it claimed only to achieve similar outcome. The claims were therefore dismissed by the court.

As a consequence, the Court ordered the trade mark 1653383 freezeframe PROTOX in Class 3 to proceed to registration.

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.